ASSA ABLOY AB

Patent Trials and Appeals Board

May 29, 2020

14785653 - (D) (P.T.A.B. May. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/785,653 10/20/2015 Mark ROBINTON 5483.183US1 8769
159468 7590 05/29/2020
Schwegman Lundberg & Woessner/Assa-HID
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
WOLDEMARIAM, NEGA
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
05/29/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK ROBINTON

_____________

Appeal 2019-001813
Application 14/785,653
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–15. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
ASSA ABLOY AB. See Appeal Br. 2.

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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “creating and
managing trusted data.” (Spec. ¶ 2).
Independent Method Claim 1
1. A method, comprising:

establishing a device-to-device connection between a
trusted mobile device and a visitor mobile device and during the
device-to-device connection, receiving, at the trusted mobile
device, at least some information describing the visitor mobile
device;
generating at the trusted mobile device a request for a
guest credential to be issued to the visitor mobile device, the
request containing the at least some information describing the
visitor mobile device and sending said request to a credential
issuer;
analyzing the request generated by the credential issuer to
determine that the trusted mobile device is allowed to provision
the visitor mobile device with the guest credential; and

based on the analysis of the request, generating the guest
credential such that the guest credential is transmittable to the
visitor mobile device and is useable by the visitor mobile device
for sharing with a physical access control reader thereby
enabling a user of the visitor mobile device to access a physical
asset that is protected by the physical access control reader.

2 We herein refer to the Final Office Action, mailed Dec. 13, 2017 (“Final
Act.”); Appeal Brief, filed Aug. 20, 2018 (“Appeal Br.”); the Examiner’s
Answer, mailed Nov. 16, 2018 (“Ans.”), and the Reply Brief, filed Dec. 28,
2018 (“Reply Br.”).
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Appeal Br. 21, “CLAIMS APPENDIX” (The disputed limitation under
anticipation Rejection B is emphasized).
Rejections 3
A. Claims 1–15 are rejected under 35 U.S.C. § 101, as being directed
to a judicial exception, without significantly more. See Final
Act. 7.
B. Claims 1–15 are rejected under 35 U.S.C. § 102(a)(2) as being
anticipated by Kiukkonen. See Final Act. 8.
Evidence
The prior art relied upon by the Examiner as evidence:
Name Reference Date
Kiukkonen et al.
(“Kiukkonen”)
US 2014/0068719 A1 March 6, 2014
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.4

3 The Examiner withdrew the rejection under 35 U.S.C. § 112(b) of claims
12–15. See Ans. 4.
4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Rejection A of Claims 1–15 under § 101
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) published revised
guidance on the application of 35 U.S.C. § 101. See USPTO January 7,
2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”).5 Under that guidance,
we first look to whether the claim recites:
(1) (see 2019 Memorandum Step 2A — Prong One) any
judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) (see 2019 Memorandum Step 2A — Prong Two)
additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–
(h)).6

5 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum — Section III(A)(2).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Step 1, the 2019 Memorandum synthesizes, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
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According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
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2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Memorandum, Step 2A, Prong One
The Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
Abstract Idea
The Examiner concludes the claims recite an abstract idea of “creating
a contractual relationship (i.e. establishing a device-to-device connection
between a trusted mobile device and a visitor mobile device).” Final Act. 7.
We evaluate, de novo, whether independent claims 1 and 12 recite an
abstract idea based upon the 2019 Memorandum. However, under Step 2A,
Prong One, we conclude neither the steps of method claim 1, including the
step of establishing a device–to–device connection, nor independent
apparatus claim 12, claiming “a mobile device interface,” recite an abstract
idea as defined in any of the three categories enumerated and explained in
the 2019 Memorandum, 84 Fed. Reg. at 52.
In particular, we disagree with the Examiner that “[t]he creation of a
contractual relationship as recited in the claim is a commercial arrangement
involving contractual relations similar to the fundamental economic
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practices found by the courts to be abstract ideas (e.g., hedging in Bilski,
mitigating settlement risk in Alice).” Final Act. 3.
Contrary to the Examiner’s determination, the claimed access
control in the context of a mobile device-to-device connection has nothing
to do with financial or commercial arrangements or contracts.
To the extent that the steps of: (1) “generating . . . a request for a
guest credential to be issued to the visitor mobile device,” or (2) “analyzing
the request” might arguendo be performed alternatively as a mental process,
we nevertheless conclude the following access control feature is a
meaningful limitation7 that sufficiently integrates the judicial exception into
a practical application under the 2019 Memorandum, at Step 2A, Prong Two:
based on the analysis of the request, generating the guest
credential such that the guest credential is transmittable to the
visitor mobile device and is useable by the visitor mobile device
for sharing with a physical access control reader thereby
enabling a user of the visitor mobile device to access a physical
asset that is protected by the physical access control reader.
Claim 1 (emphasis added).
Independent claim 12 recites similar language of commensurate
scope. Accordingly, in applying the guidance under the 2019 Memorandum,
we are constrained on this record to reverse the Examiner’s Rejection A
under 35 U.S.C. § 101 of all claims 1–15 on appeal.

7 See MPEP § 2106.05(e).
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Rejection B of Claims 1–15 under § 102(a)(2)
Anticipation Rejection B of Independent Claim 1
Regarding claim 1, Appellant contends: “[T]here is absolutely no
disclosure of Kiukkonen of distributing guest credentials for use in a
physical access control system.” Appeal Br. 13 (emphasis added).
Issue 1: Under 35 U.S.C. § 102(a)(2), we focus our analysis on the
following argued limitation (in italics) that we find is dispositive regarding
anticipation Rejection B of independent claim 1:
Did the Examiner err by finding that Kiukkonen discloses the disputed
limitation:
based on the analysis of the request, generating the guest
credential such that the guest credential is transmittable to the
visitor mobile device and is useable by the visitor mobile device
for sharing with a physical access control reader thereby
enabling a user of the visitor mobile device to access a physical
asset that is protected by the physical access control reader,

within the meaning of representative independent claim 1?8 (Emphasis
added). See Final Act. 8–10.
Claim Construction
As an initial matter of claim construction regarding the broadest
reasonable interpretation of the claim 1 term “physical access control
reader,” we turn to the Specification for context. (Emphasis added).
However, we do not find an explicit definition in the Specification for this

8 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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claim term. Instead, the only mention found in the Specification is a non-
limiting example of providing guest credentials to an access control reader.
(Emphasis added). Spec. ¶ 33: “Once stored, the guest credential can be
used by the visitor mobile device 108 to access one or more assets in an
access control network, for example by providing the guest credential to an
access control reader.” (Emphasis added). We note the Specification also
discloses that the first mobile device is capable of provisioning the second
mobile device with a guest credential to access “one or more secured logical
or physical assets in an access control system.” See Spec. ¶ 13.
Given this supporting description, we are not persuaded the Examiner
erred in applying a broad but reasonable interpretation of the claim 1 term
“physical access control reader” and reading it on Kiukkonen’s
“authentication module 48 in the access rights server 35” that allows “guest
device B” to gain access to an “access point AP.” Kiukkonen ¶ 230; see
also ¶ 78: i.e., “transmit the credentials to the guest wireless device to enable
it to gain access to the wireless access point or network by using the
credentials.” We emphasize that because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 9

9 Claim construction is an important step in a patentability determination.
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims . . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” (Internal citations omitted)). “Anticipation of a
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Moreover, we agree with the Examiner’s conclusion that the
limitation in method claim 1 of “enabling a user of the visitor mobile device
to access a physical asset that is protected by the physical access control
reader” is a statement of intended purpose. See Ans. 4. Our reviewing
court provides applicable guidance: “An intended use or purpose usually
will not limit the scope of the claim because such statements usually do no
more than define a context in which the invention operates.” Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the
claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
This reasoning is applicable here, at least with respect to method
claim 1. Therefore, on this record, a preponderance of the evidence supports
the Examiner’s finding of anticipation regarding claim 1.
Accordingly, we sustain the Examiner’s anticipation Rejection B of
independent representative claim 1.

patent claim requires a finding that the claim at issue ‘reads on’ a prior art
reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir.
1999).
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Anticipation Rejection B of Independent Claim 12
12. A mobile device, comprising:

a mobile device interface enabling the mobile device to
establish a device-to-device connection with a visitor mobile
device and receive at least some information describing the
visitor mobile device; and

a credential request unit that generates and sends a
request for the guest credential to a credential issuer on behalf
of the visitor mobile device, the request containing the at least
some information describing the visitor mobile device, wherein
the guest credential is storable in memory of the visitor mobile
device and is configured for transmission by the visitor mobile
device to an access control reader that protects a physical
asset.
Appeal Br. 22, “CLAIMS APPENDIX” (emphasis added).
Regarding independent apparatus claim 12, Appellant contends:
[T]he “credentials” disclosed in Kiukkonen are not
storable in memory of a visitor mobile device, nor are they
configured for transmission by the visitor mobile device to an
access control reader that protects a physical asset. Rather, the
“credentials” of Kiukkonen are disclosed to correspond to a
password for accessing a wireless network. See Kiukkonen at
para. [0115]. There is no disclosure in Kiukkonen of a credential
that is configured for transmission to an access control reader that
protects a physical asset as recited in claim 12.
Appeal Br. 14.
We do not sustain the Examiner’s anticipation Rejection B of device
(apparatus) claim 12, because we conclude the limitation “the guest
credential is storable in memory of the visitor mobile device and is
configured for transmission by the visitor mobile device to an access
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control reader that protects a physical asset” positively recites a
configuration of a visitor mobile device structure that is capable of
performing the recited function of transmitting the guest credential.
Therefore, we give this limitation full patentable weight in
independent apparatus claim 12, and reach a different result than discussed
above regarding the intended purpose recited in method claim 1.
Accordingly, for essentially the same reasons argued by Appellant (Appeal
Br. 14), we are constrained on this record to reverse anticipation Rejection B
of independent claim 12, and of claims 13–15 which depend directly or
indirectly from claim 12.

Rejection B of Dependent Claims 2–11 under § 102(a)
Dependent claim 2 recites: “The method of claim 1, further
comprising: storing the guest credential in memory of the visitor mobile
device as one or more Near Field Communications (NFC) Data Exchange
Format (NDEF) records.”
The Examiner finds that Kiukkonen’s Figure 5B discloses a NFC data
delivery message sent from the NFC tag to a guest wireless device B in Fig.
1D to enable it to read the NFC data. See Final Act. 10.
Appellant disputes the Examiner’s findings and argues “Kiukkonen
does not disclose storing the credential in memory of the visitor mobile
device as an NDEF record.” Appeal Br. 15.
Issue 2: Did the Examiner err by finding that Kiukkonen discloses
“storing the guest credential in memory of the visitor mobile device as one
or more Near Field Communications (NFC) Data Exchange Format (NDEF)
records,” as recited in dependent claim 2? See Final Act. 10.
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We find the portions of Kiukkonen the Examiner has cited (¶ 127 and
Fig. 5B) do not disclose that the stored data is a guest credential. See Final
Act. 10. A close examination of the evidence in paragraphs 113 and 114 of
Kiukkonen discloses that a NFC tag is actually used to obtain a “URL for
AP” which is described as “an address for the storage partition in the
database where the credentials are stored for the guest device B.”
Kiukkonen ¶ 114 (emphasis added).
Therefore, we find the NFC tag described in Kiukkonen (¶¶ 113–114)
is not the same as a credential, and therefore Kiukkonen does not disclose a
guest credential that is stored in the memory of the visitor mobile device “as
one or more Near Field Communications (NFC) Data Exchange Format
(NDEF) records,” as recited in dependent claim 2.
See Kiukkonen ¶¶ 113–114:
FIG. 1D shows the example network diagram of FIG. 1C,
wherein in a first embodiment, a guest wireless device B that
wishes to access the access point AP, reads data from the NFC
tag, including the URL expression “URL for AP”, the figure
further showing a second embodiment wherein the guest
wireless device B reads the two-dimensional barcode image
representing the URL expression “URL for AP” that has been
printed onto a surface, in accordance with example
embodiments of the invention.
Kiukkonen ¶ 113.
FIG. 1E shows the example network diagram of FIG. 1D,
wherein the guest wireless device B transmits a message
requesting access credentials to enable accessing the access
point AP, the request including URL expression “URL for AP”
to indicate the identity of the requester as device B, the access
rights server establishing the URL expression “URL for AP” as
an address for the storage partition in the database where the
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credentials are stored for the guest device B, in accordance with
example embodiments of the invention.
Kiukkonen ¶ 114.
Given this evidence, we are constrained on this record to reverse the
Examiner’s anticipation Rejection B of dependent claim 2. For the same
reasons, we also reverse the Examiner’s Rejection B of claims 3–11 that
variously and ultimately depend from claim 2.

CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that all claims 1–15, rejected under 35 U.S.C. § 101,
(Rejection A) are directed to patent-eligible subject matter.
The Examiner did not err with respect to anticipation Rejection B of
claim 1 under 35 U.S.C. § 102(a)(2) over Kiukkonen.
The Examiner erred with respect to anticipation Rejection B of claims
2–15 under 35 U.S.C. § 102(a)(2) over Kiukkonen.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 101 Eligibility 1–15
1–15 102(a)(2) Kiukkonen 1 2–15
Overall
Outcome
1 2–15

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FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART